Ronald Bennett and Jacob Fakouri

Trademark Trial and Appeal Board

May 13, 2013

No. 85485633 (T.T.A.B. May. 13, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ronald Bennett and Jacob Fakouri1
_____

Serial No. 85485633
_____

Matthew H. Swyers of The Trademark Company PLLC for Ronald Bennett and
Jacob Fakouri.

Dawn Han, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_____

Before Bucher, Wellington, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On December 2, 2011, applicants Ronald Bennett and Jacob Fakouri applied
to register the following mark:

1 The application was originally filed in the name of GNC Distributors, LLC. The October
18, 2012 assignment from GNC Distributors, LLC to Messrs. Bennett and Fakouri is
recorded in the Office Records at Reel/Frame Numbers 4884/0009.
Serial No. 85485633
2

on an intent-to-use basis pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b), for “insect-repellants” in International Class 5.2 The application included
a voluntary disclaimer of the literal portion of the mark, “THE MOSQUITO
PATCH.”
The examining attorney has refused registration on the ground that the
applied-for mark is merely descriptive of applicants’ goods pursuant to Trademark
Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Applicants timely appealed.
Analysis
A mark is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of an ingredient, quality, characteristic, function,
feature, purpose, or use of the goods with which it is used. See, e.g., In re Chamber
of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular mark is merely descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which the mark is used, and the possible significance that the mark is likely to have
to the average purchaser encountering the goods or services in the marketplace.
See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978); In re Engineering Sys. Corp., 2 USPQ2d 1075, 1076
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).

2 Application Serial No. 85485633.
Serial No. 85485633
3

When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
the question of whether the combination of terms evokes a new and unique
commercial impression. If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely
descriptive of computer software for managing a database of records that could
include patents for tracking the status of the records by means of the Internet); In
re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (URBANHOUZING merely
descriptive of real estate brokerage, consultation, and listing services); In re Tower
Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely descriptive
of commercial and industrial cooling towers); In re Putman Publ’g Co., 39 USPQ2d
2021, 2022 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
online news and information service for the food processing industry).
However, a mark comprising a combination of merely descriptive components
is registrable if the combination of terms creates a unitary mark with a unique,
nondescriptive meaning, or if the composite has a bizarre or incongruous meaning
as applied to the goods. In other words, we must consider the issue of
descriptiveness by looking at the mark in its entirety.
Applicants have conceded the common, descriptive nature of the phrase “THE
MOSQUITO PATCH” by disclaiming exclusive rights in that phrase apart from the
Serial No. 85485633
4

mark as a whole. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
Thus, we examine the remaining components of the mark, its stylization and
design, to determine whether the composite mark as a whole is merely descriptive.
As can be seen more clearly below, applicants’ mark features a realistic
image of a mosquito underlying the universal prohibition symbol:

The applicants make two main arguments. First, applicants contend that a
mosquito logo could be used in connection with a number of different products and
services, “such as a fly swatter, insecticides for plants, exterminator services,
education services regarding the dangers of certain kinds of insects, a campaign
against harming insects, etc.”3 Similarly, applicants argue, the mark considered in
its entirety “conjures up other possible ideas. The term, ‘Patch’ may refer to a
garden patch where vegetables are grown, or a patch worn on clothing for fashion or
to cover up a hole or stain in a garment.”4

3 Appeal Brief at 6.
4 Id. at 7.
Serial No. 85485633
5

These arguments do not address the proper descriptiveness analysis. It is
settled that “[t]he question is not whether someone presented with only the mark
could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them.” In re Tower Tech, Inc., 64 USPQ2d at 1316-17.
Viewing applicants’ mark in relation to their goods, it is clear that a universal
prohibition symbol superimposed over a realistic image of a mosquito, in
combination with the descriptive, if not generic, wording “THE MOSQUITO
PATCH,” conveys information about applicants’ insect repellants – that is, that
their function is to repel mosquitoes. In addition, applicants voluntarily disclaimed
the literal portion of the mark, THE MOSQUITO PATCH. Thus, their argument
now that the term “patch” is ambiguous and could be a reference to a garden or
clothing patch is not well taken.
Second, applicants argue that several registrations have issued that
incorporate images of an insect along with the universal prohibition symbol for
insect repellant and extermination products and services. Applicants provide the
following seven examples in their appeal brief:5

5 Appeal Brief at 7-9. Copies of each of these registrations were attached as Exhibit A to
both of applicants’ two responses to Office actions, submitted May 7, 2012 and October 3,
2012. Applicants also rely on application Serial No. 85282109, but pending applications are
evidence only of the fact that they were filed. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d
1581, 1583 (TTAB 2007) (citing Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699
(TTAB 1992)).
Serial N

o. 854856
Mark
33

Re
33
32
32
33

31
25
40
6
g. No.
81873
48387
91853
66867
53877
73982
57684
Disclaim
None
“Mosquito
None
“Mosquito
“Bug Zone
“Insect” an
“Natural”
None
er
Insect
” Electrattrac
insect
Delive
compr
operat
and n
delive
treatm
protec
cessat
insect
flying
” Mosqukits, c
prima
nozzle
conne
insect
attach
operat
blowe
” Bag orepels
insect
witho
harmf
works
freque
d Insectthe sk
functi
screen
Jellyfi
compr
first a
plasti
applyi
as a u
Goods
repellants
ic devices f
ting and ki
s
ry system
ised of pow
ed pump, t
ozzle for
ry of chemi
ent for
tion and
ion of flying
attacks an
insect sting
ito repellan
omprised
rily of spra
s, tubes,
ctors along
icide which
to power-
ed yard
rs
f liquid that
bugs and
s of all type
ut any spra
ul chemica
off light an
ncy
repellent f
in that also
ons as a sun
preparatio
sh sting kit
ised of a to
id gel and
c gloves for
ng the gel,
nit
or
lling
er-
ank
cal

d
s
t
yer
with

s
ys or
ls,
d
or

n
,
pical
sold
Serial No. 85485633
7

Applicants argue that it would be inconsistent for the Office to refuse registration of
their mark in view of the fact that these registrations issued.6
The examining attorney distinguishes each registration cited by applicants,
primarily on the basis of the degree of stylization and the fact that they are unitary
and not descriptive of the identified goods.7 The examining attorney, in turn,
provides five examples of marks registered for similar goods and services in which
the universal registration symbol and/or a realistic bug depiction is disclaimed:8
Mark Reg. No. Disclaimer Goods / Services

2630492 “Bug,” the international
prohibition
symbol and the
mosquito
design
Insect protective
garments comprising
pants and tops for
use over outer
clothing

3242404 “Bug,” the international
prohibition
symbol, or the
representation
of the mosquito
and the spider
Termite and pest
control

4055185 “Bed Bug, the universal
prohibition
symbol logo
and the bed
bug insect
depiction”
Insecticides for
domestic use and
insect repellant

6 Appeal Brief at 9.
7 Examiner’s Brief at unnumbered p. 8-9.
8 Id. at unnumbered p. 9-10. The fourth registration was attached to the August 6, 2012
Office action, the fifth was attached to the November 25, 2012 final Office action, and the
first three registrations were attached to both Office actions.
Serial No. 85485633
8

Mark Reg. No. Disclaimer Goods / Services

4071237 Universal prohibition
symbol
Insect repellants

3579023 “Skeeter” and representation
of a mosquito
Aerosol insecticide
contained in a
portable housing
apparatus that
automatically sprays
to control insects
outdoors, especially
mosquitoes

Prior decisions in other applications are not binding on the Board, and each
case must stand on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Scholastic Testing Serv., Inc., 196 USPQ
517, 519 (TTAB 1977). However, third-party registrations featuring the same or
similar goods as applicants’ goods are probative evidence on the issue of
descriptiveness where the relevant word or term is disclaimed. See Sweats
Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797
(Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
The registrations submitted by the examining attorney are some evidence of the
descriptive nature of marks featuring images of realistic bugs overlaid by the
universal prohibition symbol when used in association with insect repellants and
similar goods and services.
Serial No. 85485633
9

Moreover, the examining attorney argues that the mosquito design creates no
distinct commercial impression other than that of its legal equivalent, and thus is
treated the same as the descriptive word “mosquito.”
A visual representation that consists merely of an illustration of the goods, or
of an article that is an important feature or characteristic of the goods, is merely
descriptive under Section 2(e)(1) of the Act. See In re Soc’y for Private &
Commercial Earth Stations, 226 USPQ 436, 438 (TTAB 1985) (requiring disclaimer
of non-fanciful design of earth station for services of association promoting interests
of members of earth station industry); In re Underwater Connections, Inc., 221
USPQ 95, 96 (TTAB 1983) (holding pictorial representation of compressed gas tank
merely descriptive of travel tour services involving underwater diving); In re Eight
Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983) (holding mark comprising pictorial
representation of cue stick and eight ball merely descriptive of billiard parlor
services); Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504, 511-12
(TTAB 1978) (finding pictorial representation of a thistle merely descriptive of class
of sailboats sold by applicant).
We find the design component of applicants’ mark, displaying a non-fanciful
image of a mosquito within the universal prohibition symbol, to be merely
descriptive for an important feature or characteristic of their goods, that is, that
they repel mosquitoes. In its wording and design, the mark thus comprises two
merely descriptive elements that in combination retain their descriptive
significance in relation to the goods.
Serial No. 85485633
10

Finally, the examining attorney contends – and we agree – that the degree of
stylization in applicants’ mark is not sufficiently striking, unique, or distinctive so
as to create a commercial impression separate and apart from the other components
of the mark. See In re Sambado & Son Inc., 45 USPQ2d 1312, 1316 (TTAB 1997);
In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1227 (TTAB 1987).
Viewing applicants’ mark as a whole, we find that consumers who know that
applicants’ goods are insect repellants will understand the mark to convey
information about them; that is, that the goods will be patches with the intended
function of repelling mosquitoes. We therefore find that applicants’ mark is merely
descriptive within the meaning of Section 2(e)(1) in association with applicants’
goods.
Decision: The examining attorney’s refusal to register applicants’ mark
under Section 2(e)(1) of the Trademark Act is affirmed.